November 19, 2009

Fatigued

6,100,287
claims a nutritional supplement for "enhancing muscle performance" and
recovering from fatigue. Iovate sued BSN over '287. The district court found the
asserted claims anticipated by advertisements in Flex magazine. It took no
muscle flex for the CAFC to confirm.

On August 27, 2008, the district court granted BSN's motion, holding
claims 1, 2, 5, 7, 8, 9, and 18 invalid under § 102(b) as anticipated by
advertisements for TwinLab® Mass Fuel and Weider's VICTORYTM
Professional Protein published in Flex magazine before the November 13,
1996, critical date. Each ad includes a list of ingredients, directions for
administering the dietary supplement orally to humans, and marketing claims
and testimonials from bodybuilders extolling the virtues of the product.

Protein supplements are not healthy. The worst continuing fiction of
nutritional publication in this country is an emphasis on consuming too much
protein. The body naturally builds its own proteins from amino acids in food and
recycling of aged cells (autophagy). Metabolizing excessive protein is energy
inefficient and results in considerable waste products, not to mention turning
into fat. A healthy diet comprises vegetables and fruits, with modest amounts of
grains and beans. Vegetables, grains, and beans are all high in usable protein.

Anticipation

To be anticipatory, the ad must also describe, either expressly or
inherently, each and every claim limitation and enable one of skill in the
art to practice an embodiment of the claimed invention without undue
experimentation. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).

To avoid anticipation, Iovate relies on conclusory expert testimony and
attempts to increase the specificity of the language used in the claims'
preamble. But even assuming that the preamble limits the claims, there is no
evidence that those skilled in the art of nutritional supplements used the
term "enhancing muscle performance"--and thus "increasing the ability of
muscle to maintain required or expected force or power output"--to exclude
increasing muscle strength. Such an argument borders on the frivolous. In
fact, both the patent specification and Iovate's infringement allegations
refer to muscle strength as a proxy for this term.

Iovate also seeks to avoid anticipation by reading an effectiveness
requirement into the preamble, which, it argues, the ads fail to disclose.
But the '287 patent claims do not restrict the administration of the claimed
amino acid and ketoacid composition to any specific dosage or amount, or
even an "effective amount." The claims also do not require any further
measurement or determination of any result achieved by administering the
claimed composition. Thus, the ad's disclosure of a certain composition
taken for a certain purpose suffices for the purpose of anticipation.
Bristol-Myers, 246 F.3d at 1378; see also Gleave, 560 F.3d at
1336 ("[W]here the claims themselves do not require a particular activity,
we have no call to require something more from the anticipating
reference.").

[R]egardless of any questions about false advertising, the ad teaches
that taking a supplement containing the claimed ingredients as advertised is
effective for increasing muscle performance and recovery after exercise.

Enablement

Iovate argues that the district court erroneously focused on whether a
person of ordinary skill in the art could have made the advertised
supplements rather than the claimed invention. Furthermore, Iovate contends,
the record lacks any evidence that the ad taught a skilled artisan how to
make a composition effective for enhancing muscle performance or recovery
from fatigue because the ads lack any guidance on appropriate ingredient
dosages.

We agree with BSN that all one of ordinary skill in the art would need to
do to practice an embodiment of the invention is to mix together the known
ingredients listed in the ad and administer the composition as taught by the
ad.